WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Netbank Inc. v. Banco Nacional de Mexico
Case No. D2012-1436
1. The Parties
The Complainant is Netbank Inc. of Phoenix, Arizona, United States of America, represented internally.
The Respondent is Banco Nacional de Mexico of Mexico D.F, Mexico, represented by Molina Salgado & de Alva, Mexico.
2. The Domain Name and Registrar
The disputed domain name <bancanet.com> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2012. On the same day, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the disputed domain name and received by email Network Solutions, LLC’s verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 25, 2012. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 14, 2012. The Response was filed with the Center on August 14, 2012.
The Center appointed Brigitte Joppich as the sole panelist in this matter on August 23, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules.
4. Factual Background
The Complainant is located in the United States and provides (or used to provide) financial services.
The Respondent is the largest bank in Mexico.
The disputed domain name was registered on February 7, 1999 and used by the Respondent in connection with a website providing online banking services for its clients. For security reasons, the Respondent temporarily blocked disputed domain name, which is currently inactive.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The Complainant states that the disputed domain name is confusingly similar to the Complainant’s registered and common law marks NETBANK and BANKNET (protected and used in connection with financial services in the United States and Canada), as the disputed domain name consists of the terms “banca” and “net”, which are Spanish for “bank” and “net” or “net bank”.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name, as its name is Banco Nacional De Mexico (not Bancanet), as it is commonly known by the acronym “banamex” (not “bancanet”), as it uses the acronym “banamex” (not “bancanet”) in connection with its financial services, as it has not acquired any trademark or service mark rights in BANCANET in the United States or in Canada, as it is making an illegitimate commercial use of the disputed domain name, with intent for commercial gain, to misleadingly divert the Complainant 's customers, and as it is tarnishing the trademarks owned by the Complainant and trying to dilute them.
(3) With regard to bad faith, the Complainant argues that the disputed domain name is not used and has apparently never been used since its registration, that the disputed domain name was registered by the Respondent in order to prevent the Complainant from reflecting its marks in a corresponding domain name, that the Respondent has engaged in a pattern of the above-described conduct (continuously renewing the disputed domain name without using it), and that the disputed domain name was registered primarily for the purpose of disrupting the business of the Complainant, who is a direct competitor of the Respondent.
The Respondent denies the Complainant’s contentions. With regard to the three elements specified in paragraph 4(a) of the Policy, the Respondent argues as follows:
(1) As to the Complainant’s alleged trademark rights, the Respondent states that the Complainant did not mention or identify the registration numbers of the marks NETBANK and BANKNET, supposedly registered in the United States and Canada with respect to financial services, that the Complainant thus did not provide any evidence with regard to its alleged registered trademark rights, and that there are no registered marks (in force) for the terms “netbank” and/or “banknet” with respect to financial services in class 36 or in any other class in the name of the Complainant in the databases of the United States Patent and Trademark Office (USPTO) or the Canadian Intellectual Property Office (CIPO). Furthermore, the Respondent states that the Complainant did not explain or prove how it acquired common law rights in the marks NETBANK and/or BANKNET in the United States or Canada.
The Respondent further argues that the disputed domain name and the terms “netbank” and BANKNET are not confusingly similar.
(2) With regard to the Respondent’s rights or legitimate interests in the disputed domain name, the Respondent provides a list of its Mexican trademark registrations for BANCANET and trademarks containing BANCANET and states that this demonstrates that it has rights and legitimate interests in respect of the disputed domain name.
The Respondent further contends that the trademark BANCANET is used by the Respondent with respect to financial services through different means, including its use on the Respondent’s website at “www.banamex.com”, and more specifically, in the URL https://bancanet.boveda.banamex.com.mx/serban/index.htm, that such use is a legitimate commercial use and also demonstrates that the Respondent has rights and legitimate interests in respect of the name BANCANET and in the disputed domain name.
(3) With regard to bad faith, the Respondent denies the Complainant’s contention that the disputed domain name has never been used. Furthermore, it states that it registered the disputed domain name on February 7, 1999, i.e. presumably prior to the existence or incorporation of the Complainant, that the disputed domain name does not correspond to the Complainant’s alleged trademark rights, that it is not preventing the Complainant or any other party from reflecting their marks in a corresponding domain name, that it has not engaged in any pattern to affect the Complainant’s or third parties’ rights or interests, and that it does not intend to affect or disrupt any third party’s business, particularly not the business of a competitor or the Complainant.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In its Complaint, the Complainant relies on registered and common law marks NETBANK and BANKNET. The Complainant does not appear to own registered trade mark rights in NETBANK or BANKNET. With regard to common law trade mark rights, the Panel finds that the Complainant failed to provide sufficient evidence that it can rely on such rights under the Policy. It is consensus view that common law trade mark rights may be sufficient for the purposes of establishing rights under paragraph 4(a)(i) of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”); UITGERVERIJ CRUX v. W. FREDERIC ISLER, WIPO Case No. D2000-0575; Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314; Amsec Enterprises, L.C. v. Sharon McCall, WIPO Case No. D2001-0083; Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786; Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322). However, a complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. A conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice. In fact, specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.
The Complainant has not provided any evidence whatsoever with regard to its business activities. No claim regarding a secondary meaning of the Complainant’s present and/or former company names has been brought forward by the Complainant, and absolutely no evidence in support of such claim has been presented to the Panel. As a result, no rights have been established by the Complainant in its company name Netbank, let alone in the second level of the disputed domain name “bancanet”. The Panel therefore cannot but find that on the record of these Policy proceedings the Complainant failed to establish the first element of the Policy.
As a result, it is not necessary for the Panel to make a finding with regard to the second or third element of the Policy.
For the foregoing reasons, the Complaint is denied.
Dated: September 2, 2012